A recent Zambian supreme court ruling could have a ripple effect in other African jurisdictions.
"Companies conducting business in Zambia with unregistered trade marks should be concerned," says Donvay Wegierski, an intellectual property director at Werksmans Attorneys. "By removing recognition of rights in unregistered trade marks in trade mark oppositions there is nothing – or very little – stopping a competitor from registering a trade mark that is identical or confusingly similar to a trade mark that is unregistered in Zambia. "
"The likelihood of other African states following the Zambian court's interpretation cannot be excluded."
Wegierski is referring to a Supreme Court ruling, made on 23 April 2012, which seemingly does away with protection that companies operating in Zambia have to date relied on.
Proprietors of unregistered trade marks in Zambia have traditionally relied on sections 16 and 17 of the Zambian Trade Marks Act to oppose a latter filed trade mark application. "According to the Supreme Court's recent ruling, however, these sections confer rights in respect of registered marks only."
Nothing stopping competitors
Wegierski says this "contentious decision" has removed the reliance on common law rights in trade mark oppositions in Zambia. "Consequently, the proprietor of an unregistered mark is unable to prevent a competitor from registering a trade mark that is identical or confusingly similar."
Against this backdrop, companies with unregistered marks would be well advised to apply for registration to prevent any competitors from doing so. Indeed, companies would be advised to adopt this approach in other African states as well.
"The Zambian court's decision raises the question as to whether or not any other African states will follow its interpretation and in so doing, disregard the protection of unregistered marks in trade mark oppositions," she says. "Whereas trade mark registration did not necessarily warrant attention when economic growth was slow, this is no longer the case now that growth is picking up speed and the purchasing power of consumers is increasing."
As economic growth gains momentum, so is consumers' interest in branded goods, says Wegierski. "This is turn encourages competition, including opportunistic competition targeting well-established brands that may lack only one thing – trade mark protection."
Wegierski says the time taken to process trade mark applications varies from country to country, with some completing registrations in a few months and others in a few years (mainly where registries are still kept manually or where registration information is not regularly updated).
Flagging priority countries
"Delays in securing registrations should not deter businesses wishing to expand into Africa from protecting their trade marks," she says. Trade mark registration should be high on the agenda of companies moving into Southern African Development Community countries, namely Angola, Botswana, Democratic Republic of Congo, Lesotho, Malawi, Mauritius, Mozambique, Namibia, Swaziland, South Africa, Seychelles, Tanzania, Zambia and Zimbabwe.
Another priority country for trade mark registrations is Nigeria, where Wegierski says all food and drink products imported, exported, manufactured or distributed must be registered by Nigerian Food and Drug Administration and Control. "One of the requirements to secure NAFDAC approval is proof of a Nigerian trade mark application or registration."
Wegierski also advises companies expanding into Africa to conduct thorough due diligence checks on intellectual property before concluding any transactions. "Companies should ensure that all intellectual property known to the parties is accounted for during negotiations and specified in agreements."
The reason for this is that searches of trade mark registers – although vital – can encounter lengthy delays or might not yield reliable results.
"Again, I want to emphasise that slow registration processes should not deter investors from pressing ahead with their applications," she says. "Unregistered trade marks are increasingly more vulnerable".
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.